SCOTUS’s ruling in B&B could shift more resources to TTAB cases, lawyers say
A US Supreme Court decision on likelihood of confusion rulings in trademark cases could see parties put more resources into disputes at the Trademark Trial and Appeal Board (TTAB), lawyers have claimed.
In a reversal of an appeal court’s decision, the Supreme Court ruled yesterday (March 24) in B&B Hardware v Hargis Industries that decisions by the TTAB on likelihood of confusion should preclude any identical issues from being re-litigated in a district court.
The TTAB is a body at the US Patent and Trademark Office (USPTO) that hears cases related to trademarks, including oppositions to applications filed by other parties and to applications rejected by examiners.
Speaking to WIPR, Marc Rachman, partner at law firm Davis & Gilbert in New York, said that as a result of the decision it is likely parties will put more resources towards TTAB opposition proceedings if they know the outcome could preclude litigation.
The dispute centres on two companies that make sealing fasteners. B&B Hardware owns a trademark for the word ‘Sealtight’, while Hargis Industries used and sought to register the term ‘Sealtite’.
B&B filed an opposition to the application at the TTAB and argued that it was too similar to its mark.
The TTAB agreed and denied Hargis the registration because there would be a likelihood of confusion.
But, in a separate infringement action at the US District Court for the Eastern District of Arkansas, B&B said Hargis was unable to contest the likelihood of confusion between the two marks because of the TTAB’s decision.
The district court and the US Court of Appeals for the Eighth Circuit disagreed with B&B, but both rulings were then overturned by the Supreme Court’s decision.
Evan Gourvitz, counsel at law firm Ropes & Gray, said that following the ruling, parties may decide either to litigate their TTAB actions “more vigorously” or skip them entirely in favour of federal court litigation.
He added: “As for the TTAB, it may decide to better harmonise its analysis with that used by the federal courts by (for example) giving greater weight to how the marks it considers are actually used in the marketplace.”
Ron Coleman, partner at law firm Goetz Fitzpatrick, said there will now be a lot more de novo reviews of TTAB decisions, with “full evidentiary submissions and all the expense that entails”.
“The only alternative appears to be an amendment of the Lanham Act. That probably should be considered in order to establish streamlined, economical USPTO proceedings, which is something the Supreme Court has determined is not a part of the act now but which probably everyone agrees should be,” he added.
